Anthony Venturino MILANO 10 February 2012 SELECTED PROVISIONS OF THE LEAHY Smith AMERICA INVENTS ACT OF 2011 AIPPI - AIPLA 1 © AIPLA

AIA Sections Already In Effect © AIPLA ChangeApplies to Prior User Rightsany patent issued on or after 16 Sept Advice of Counsel16 Sept Virtual marking and Limitations on False Marking suits cases pending or commenced after 16 Sept Elimination of Best Mode as a defense proceedings commenced on or after 16 Sept. 2011

Section 5. Prior User Rights 35 USC Sec Prior user rights cover all technologies, not merely business method claims Prior user rights are a defense to infringement based on earlier commercial use of a process or instrumentality used in manufacturing or other commercial process. Applies to internal commercial use or arm’s length sale of the end result of the commercial use. © AIPLA

Section 5. Prior User Rights The accused infringer must prove –It (or its predecessor in interest based on limited transfer rights) began to commercially use the invention in the US, at least one year before the earlier of (1) the patent’s effective filing date or (2) the date the patentee publicly disclosed the invention under 35 USC Sec. 102(b). –Prior user’s version must be created independently and without derivation from the patentee’s version. –The use was in good faith. © AIPLA

Section 5. Prior User Rights Cannot assert the defense if the claimed invention was, at the time the invention was made, owned or subject to an obligation of assignment to a university. An infringer failing to show a reasonable basis for asserting the defense is liable for attorneys fees. © AIPLA

Section 17. Advice of Counsel 35 USC 298 – Failure to obtain legal advice with respect to allegedly infringed patents or failure to present this advice to a court or jury cannot be used to prove willful infringement or that the infringer intended to induce infringement. – Follows current case law (In re Seagate Technology) except it expands the case law to prevent using these facts to prove the alleged infringer intended to induce infringement. © AIPLA

Section 16. Marking False Marking – Only the US may sue for the statutory penalty of $500 per offense – A person who suffered competitive injury can sue for recovery of damages to compensate for the injury – Marking a product with an expired patent number is not a violation Virtual marking - Patentee may mark an article with “Patent” or “Pat.” with a link to free website associating the article with the patent number. © AIPLA

Section 15. Best Mode 35 USC 282 no longer permits failure to disclose best mode as a ground for invalidity or unenforceability However, 35 USC 112 still contains a best mode requirement USPTO can still examine an application for failure to disclose best mode (Sept. 20, 2011 USPTO Memorandum). Effect on foreign priority claims may differ from effect on US priority claims. –35 USC 119(e)(1) and 120 amended to remove best mode requirement. However, effect on 35 USC 119(a) to (d) is unclear. May increase the value of trade secret protection for inventions kept secret while being commercially exploited. © AIPLA

Effective 12 Months From Enactment © AIPLA ChangeApplies to Inventor’s oath/declarationany patent application filed on or after 16 Sept Third party submission of prior art in a patent file any patent issued on or after 16 Sept Third party submission of prior art for patent application any patent application filed before, on or after 16 Sept Supplemental examinationany patent issued before, on or after 16 Sept Transitional post-grant review program for covered business method patents any business method patent issued before, on or after 16 Sept. 2011

Section 4. Oath or Declaration Oath or declaration no longer requires stating no deceptive intent inventor country of citizenship inventor is the first inventor Amended 35 USC 115 requires a Statement of Inventorship –Statement may be in the Oath / Declaration and/or the Assignment –Invention “was made” by Declarant –Declarant is the “original inventor” © AIPLA

Section 4. Oath or Declaration Substitute Statement Permitted 35 USC 115 – by an Assignee or a party to whom the inventor has a obligation to assign or an interested person with sufficient proprietary interest if the inventor is deceased, incapacitated, cannot be found or refuses to sign US Patent Office is considering whether to permit an interested person with sufficient proprietary interest to make the Substitute Statement in additional circumstances – Patent will be granted to the real party in interest © AIPLA

Section 20. Reissue Oath or Declaration Proposed USPTO rules implement amended 35 USC 115 by revising and clarifying rules on reissue oaths or declarations: – Delete the requirement for a reissue oath or declaration to include a statement that all errors arose without any deceptive intent (consistent with amended 35 USC 251) – Eliminate the requirement for a supplemental oath or declaration when a claim is amended, and require a corrected oath or declaration only where ALL errors previously identified in the reissue oath or declaration are no longer being relied upon as a basis for reissue – Require applicants to specifically identify any broadening of a patent claim rather than merely provide an alternative statement that applicant is correcting an error of either claiming more or less than a patentee was entitled to claim – a single claim both broadening and narrowing treated as a broadening. © AIPLA

Section 6. Third Party Submission of Prior Art in Patent File Applies to any patent issued before, on or after 16 Sept Broadens scope of information a 3d party may submit in a patent file from merely patents and publications to – also permit statements of the patent owner filed in a Federal Court or the US Patent Office proceeding in which the patent owner took a position on the scope of any claim of a particular patent – 3d party must submit other documents from the court proceeding addressing the statement of the patent owner 3d party may explain relevance of the submission 3d party must serve a copy of the submission on the patent owner. Submission may be anonymous © AIPLA

Section 8. Third Party Submission in Application – “Preissuance Submissions” Applies to any patent application filed before, on or after 16 Sept Content – Concise description and fee – Statement of compliance with new 35 USC 122(e) Identity of real party not required It can be made in any non-provisional utility, design or plant application, as well as in any continuing or reissue application. © AIPLA

Section 8. Third Party Submission in Application – “Preissuance Submissions” Third party may submit printed publications of potential relevance to examination during pendency but before earlier of: – Allowance or – Later of: (1) 6 months after publication or (2) first rejection © AIPLA

Section 8. Third Party Submission in Application – “Preissuance Submissions” USPTO issued proposed rules: –$180 fee for every 10 documents or fraction thereof submitted –No fee if the submission lists 3 or fewer documents AND is the first and only submission under 35 USC 122(e) submitted by the party or a party in privity with the party. © AIPLA

Section 8. Third Party Submission in Application – “Preissuance Submissions” The 3d party does not have to serve a copy of the submission on the applicant Non compliant electronic submissions are not automatically entered in the Image File Wrapper The Examiner would consider the submitted information in the same way as information disclosure statements © AIPLA

Section 12. Supplemental Examination- Can remove potential grounds of inequitable conduct relating to an issued patent The patent owner may request supplemental examination of a patent to “consider, reconsider, or correct” information believed to be relevant to the patent. –A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered or was incorrect in a prior examination of a patent if the information was considered, reconsidered or corrected during supplemental examination. See 35 USC 257. © AIPLA

Section 12. Supplemental Examination Timing Patent Owner must use Supplemental Examination before being accused. –Its protection does not apply to an allegation pled in a civil action or set forth in an ANDA notice letter (§257(c)(2)(A)) received by the patent owner before the date of a supplemental examination request. Patent Owner must use Supplemental Examination before bringing suit. –Its protection does not apply to any defense raised in a patent enforcement action brought under ITC 337(a) or in a District Court based on information considered, reconsidered or corrected during supplemental examination unless the supplemental exam and any ordered ex parte reexamination are finished before the action is brought. © AIPLA

Section 12. Supplemental Examination-Reexam USPTO must conduct supplemental examination and conclude it by issuing a certificate indicating if the information raises a substantial new question of patentability (SNQ) within 3 months of the supplemental examination request date. If a SNQ is raised, then the Director must order an ex parte reexamination. –Information forming the basis of the request is not limited to patents and printed publications. Gateway to reexamination beyond patents and publications. Reexamination also permitted on 35 USC 101 or 112. © AIPLA

Section 12. Supplemental Examination §257(e) FRAUD— – If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, – then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a reexamination ordered under this section, the Director shall also refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate. © AIPLA

Section 12. Supplemental Examination- Proposed Rules Highlights The request for supplemental examination must be made by the patent owner. Only the patent owner may participate in the supplemental examination and following ex parte reexamination. Each request may include up to 10 items of information. Request must explain how each item of information is relevant to each aspect of the patent to be examined The cost would be $5,180 for the initial request and $16,120 for the ex parte reexamination. Both must be paid at the time of the initial request but the $16,120 is refunded if no reexamination. © AIPLA

Section 18. Transitional Post Grant Review Programs for Business Methods Effective September 16, 2012 Applies to any covered business method patent issued before, on, or after that effective date. Transitional proceeding employs the standards and procedures of post grant review with some exceptions, for example the 9 month time limit of 35 USC 321(c) does not apply. The first post grant review filings will be Transitional Post Grant Review of Business Method patents. –Regular Post Grant Review filings do not begin until first inventor to file patents begin to issue (from applications filed on or after March 16, 2013). © AIPLA

Section 18. Transitional Post Grant Review Programs for Business Methods Defendants charged with patent infringement of a "covered business method patent" can file a petition for a "transitional post- grant review proceeding" in an 8-year window of time beginning one year but prior to 8 years after regulations take effect. Petitioners do not have to show "reasonable likelihood that the petitioner would prevail." This proceeding can be used as a ground to stay a civil action. Petitioners prevented from raising, at trial, issues actually raised in the proceeding (not all issues that "could have been raised"). Proposed fees for filing a petition for covered business method patent review would be: $35,800 to review of 20 or less claims. © AIPLA

Sect. 18. Transitional Post Grant Review Programs for Business Methods Definition from Section 18(d)(1) – – Covered business method patents: (1) claim a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service; and (2) are not "technological inventions”. USPTO notice of proposed rulemaking says the patents subject to covered business method patent review will be typically classifiable in Class 705. – “This is the generic class for apparatus and corresponding methods for performing data processing operations, in which there is a significant change in the data or for performing calculation operations wherein the apparatus or method is uniquely designed for or utilized in the practice, administration, or management of an enterprise, or in the processing of financial data....” (quoted in part): © AIPLA

Sect. 18. Transitional Post Grant Review Programs for Business Methods Compared to inter partes reexamination, grounds for requesting review may be broader – Subject matter eligibility – New patents can be challenged based on prior art defined by the new first inventor to file system. – Old patents can be challenged based on non-published evidence of knowledge or use prior to the alleged invention in categories of prior art from the old first to invent system. old section 102(a) prior art showing the invention was known or used by others in this country, before the invention by the applicant; or Prior art that (I) discloses the invention more than 1 year before the date of the application for patent in the United States; and (II) would be prior art under old section 102(a) if made by another. © AIPLA

GRAZIE © AIPLA